Monday, December 01, 2008

Qualcomm smoked at CAFC. Jaffe and Lerner really got it wrong.

The CAFC opinion began:

This patent infringement case involves the consequence of silence in the face of
a duty to disclose patents in a standards-setting organization (“SSO”). The district court
concluded that Qualcomm breached its duty to disclose U.S. Patent Nos. 5,452,104
(“’104 Patent”) and 5,576,767 (“’767 Patent”) to the Joint Video Team (“JVT”) SSO. As
a remedy, the district court ordered the ’104 and ’767 Patents (and related patents)
unenforceable against the world. Additionally, based on both Qualcomm’s JVT
misconduct and its litigation misconduct, the court determined that this was an
exceptional case and awarded Broadcom its attorney fees.

Qualcomm had assembled a most impressive array of legal talent:

Carter G. Phillips, Sidley Austin LLP, of Washington, DC, argued for plaintiff-
appellant. With him on the brief were Stephen B. Kinnaird, Eric A. Shumsky, Peter S.
Choi, and Ryan C. Morris. Of counsel on the brief were David B. Salmons, Bingham
McCutchen LLP, of Washington, DC, and Richard S. Taffet, of New York, New York;
William S. Boggs, Brian A. Foster, Timothy S. Blackford, and Stanley J. Panikowski, DLA
Piper US LLP, of San Diego, California; and Evan R. Chesler and Peter T. Barbur,
Cravath, Swaine & Moore LLP, of New York, New York.

Qualcomm lost on every point EXCEPT the unenforceability judgment, with the CAFC requiring the
remedy limited in scope to H.264-compliant products.

What of course is ironic about the case is the reference to the CAFC in the Rambus case, 318 F.3d 1081:

It [CAFC] stated that, “[b]efore determining whether Rambus withheld
information about patents or applications in the face of a duty to disclose, this court first
must ascertain what duty Rambus owed JEDEC.” (...) this court determined that “Rambus’s
duty to disclose extended only to claims in patents or applications that reasonably might be
necessary to practice the standard.”

With the CAFC decision in Qualcomm, the thorough misunderstanding of Jaffe and Lerner in
Innovation and Its Discontents becomes complete. Jaffe and Lerner praised Qualcomm for what
it was doing and condemned Rambus. They were 180 degrees out of phase with reality.

See also


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